Overview of reexamination, reissue, opposition, and post-grant review proceedings

1. 1
Post-Grant Practice Primer
Kevin B. Laurence
Matthew C. Phillips
for
Oregon Patent Law Association
December 7, 2009

2. 2
Disclaimer
• These materials are for information purposes only and do not
constitute legal advice. Patent issues are fact-dependent and
require the assistance of counsel experienced with such
issues. These materials do not establish any form of attorney-
client relationship nor does attendance at the associated
presentation.
• These materials may contain inaccuracies, errors or omissions
despite our diligent efforts in preparing these materials, for
which any liability is disclaimed.
• The views expressed in this presentation are solely those of
the presenters and do not represent the views of Stoel Rives
LLP or clients of Stoel Rives LLP.

3. 3
Agenda
• The big picture
• Reissue
• Ex parte reexamination
• Inter partes reexamination

4. 4
The Big Picture

5. 5
Post-Grant Tools for U.S.
Patent Owners & Challengers

6. 6
Tools for U.S. Patent Owners

7. 7
Tools for U.S. Patent Owners
Error in
Prior Art
Patent
Invalid/
Minor
Inoperative
No
Amendment Overclaimed Underclaimed Specification
Needed
Corrective
Ex Parte Certificate of
Disclaimer Reissue Claim
Reexam Correction Construction

8. 8
Tools for U.S. Patent Challengers

9. 9
Tools for U.S. Patent Challengers
Prior Art
Other Basis
(§§ 102, 103,
(§§ 101,112)
or DP)
Printed Not Printed
Publication Publication
Application Application
Filed Before Filed On or
11/29/99 After 11/29/99
Ex Parte Inter Partes
Litigation
Reexam Reexam

10. 10
Reissue

11. 11
Reissue Highlights
• Filing for reissue
– Only owner can file
– Some special requirements re. format and oath
– Owner must admit existence of an error
• Not all errors are correctable by reissue
• Broadening sometimes possible
– Filed as a broadening reissue within two-year anniversary of grant
– Limited by rule against recapture
• Familiar, flexible proceeding
– Usual deadlines; extensions of time available
– RCE, continuation & divisional possible
• Claim changes can have serious consequences
• Protests possible

12. 12
Not All Errors are
Correctable by Reissue

13. 13
Errors Not Correctable by Reissue
• Deliberate acts
• Inequitable conduct
• Failure to meet the requirements of
35 U.S.C. § 112
• Failure to file divisional or continuation
application
• Undesired or unnecessary terminal
disclaimer

14. 14
Errors Correctable by Reissue
• Underclaiming
– Must file within two years
– Must express desire to broaden
– Limited by rule against recapture
• Overclaiming
• Specification
• Drawings
• Priority Claim
• Inventorship

15. 15
Errors Corrected in Patents Reissued in 2008

16. Average Pendency by Error Corrected 16
for Patents Reissued in 2008
* Excludes cases in which errors in the claims and in the priority,
inventorship, or specification were corrected, since the pendency required **No change in claim scope
for corrections to the claims is generally predominant

17. 17
Rule Against Recapture
• General statement of rule:
A patentee is prevented “from regaining, through reissue,
subject matter that was surrendered during prosecution of the
original patent in an effort to gain allowance of the original
claims.” Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006).
• Rule is a judicial construct; results from a balance of:
– Remedial aspects of the reissue statute
– Equitable aspects of the reissue statute

18. 18
Rule Against Recapture
Federal Circuit Three-step Test
1. Determine whether the reissue claims are broader in scope
than the patent claims and, if so, in what respects
2. Determine whether the broader aspects of the reissue claims
relate to surrendered subject matter
– Implicit within this step are two related sub-steps:
a) Determine whether subject matter was surrendered
b) Determine the scope of the surrendered subject matter
3. Determine whether the reissue claims were materially
narrowed in other respects
– If material narrowing is found, the recapture rule can be avoided

19. 19
Rule Against Recapture
Current BPAI and PTO View of Scope of Surrender
Original Claim: AB
Patent Claim: ABC Reissue Claim:
SCOPE OF CANCELED
AB
CLAIM
SCOPE OF ABC
PATENT CLAIM
UNEXAMINED ABCBROADENED
TERRITORY – AT LEAST
PARTIALLY
ABD
SURRENDERED ABBROADENEDC
AB
SURRENDERED A
SUBJECT MATTER B
ABBROADENED

20. Effects of Reissue (or Reexamination) 20
on Litigation Issues
• Validity Issues
– Strengthened presumption
– New bases for invalidity
• Enforceability Issues
– IC during reissue/reexam.
– Materiality of ref. in original pros.
• Infringement, Liability
& Damages Issues
– Retroactive effect of changed claims
– Intervening rights
– Design-arounds
– Claim construction
– DOE

21. Effect of Reissue (or Reexamination) 21
on Presumption of Validity
• Consideration of reference by PTO strengthens P.O.V.
Sanofi-Synthelabo v. Apotex, 470 F.3d 1368, 1375 (Fed. Cir. 2006)
(“especially difficult” to overcome)
Custom Accessories v. Jeffery-Allan, 807 F.2d 955, 961 (Fed. Cir. 1986)
(“[U]pon reissue, the burden of proving invalidity was made heavier”)
• Heightened burden overcome only 6 times.
J. Michael Buchanan, “Deference Overcome,” 2006 Stan. Tech. L. Rev. 2
• Recent movement to replace the clear-and-convincing
evidentiary standard with the preponderance standard for
validity challenges based on prior art NOT considered by PTO
Lucent v. Gateway, No. 2008-1485, -1487, -1495 (Fed. Cir. Sep. 11, 2009)
Kieff, et al., “How Not to Invent a Patent Crisis” (Oct. 30, 2009)

22. 22
Past Liability & Intervening Rights
• Scenario: There are amended or added claims.
• Question: Has the scope of the claims changed?
• If “No,” then amended/added claims
– Have retroactive effect (i.e., past damages still available)
– Do not give infringers intervening rights
• If “Yes,” then amended/added claims
– Have prospective effect only (i.e., no past damages)
– Give infringers intervening rights
PERIOD OF POTENTIAL DATE OF
PERIOD OF POTENTIAL
PAST LIABILITY REISSUANCE OR
INTERVENING RIGHTS
REEXAMINATION
CERTIFICATE

23. Examples of Non-Scope- 23
Altering Amendments
• Incorporating dependent claim into base claim
– Bloom Engineering, 129 F.3d 1247 (Fed. Cir. 1997)
• Replacing a word with an equivalent word
– Minco v. Combustion Eng’g, 95 F.3d 1109 (Fed. Cir. 1996)
• Adding explicit antecedent basis
– Slimfold v. Kinkead, 810 F.2d 1113 (Fed. Cir. 1987)
• Stating explicitly what was inherent
– Tennant v. Hako Minuteman, 878 F.2d 1413 (Fed. Cir. 1989)
– Kaufman v. Lantech, 807 F.2d 970 (Fed. Cir. 1986)

24. 24
Effects on Claim Construction
• Reissue and reexamination prosecution history is intrinsic
evidence relevant to the construction of disputed claims
• Visto v. RIM, 2008 WL 43555837 (E.D. Tex. July 2, 2008):
Court changed its claim construction based on
prosecution history during reexamination that occurred
after the court’s original claim construction
– Original: “Smartphone” = A telephone device that integrates
computing capabilities and telephone capabilities.
– Revised: “Smartphone” = A device that is a thin client of limited
computing power, i.e., with capabilities less than those provided
by an Intel 486 processor, 6 MB of RAM, and 35 MB of storage.

25. 25
Ex Parte Reexamination

26. 26
Ex Parte Reexamination Highlights
• Initiated by request for reexamination
– May be filed by owner or third party or PTO Director
– Must present a substantial new question of patentability (SNQP)
• Handled by Central Reexamination Unit (CRU)
• Ex parte prosecution
– Short deadlines
– No extensions of time as a right
– Interviews very common
– Compact prosecution with liberal after-final amendments
• No broadening allowed
• Claim changes can have serious consequences
• Much interplay with litigation

27. 27
Typical Flow of Ex Parte Reexam
Request First Office action Final Office action
SNQP? Interview Interview
YES
Response Response
Order granting
reexamination
NIRC
Reexamination
Appeal
certificate

28. 28
Case Study No. 1

29. 29
Case Study No. 1 – Patent
U.S. Pat. 5,575,925

30. 30
Case Study No. 1 – Claim
10. A method of installing a catch basin filter in a catch basin,
the catch basin comprising:
an inlet through which water and solids flow into the catch basin,
an outlet through which water flows out of the catch basin, wherein the inlet is positioned
above the outlet, and
a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess
located at the upper end, the sidewalls defining a chamber, the grate located on the top of the
basin inlet and having grate sides positioned in the recesses, and
the filter comprising:
a filter bag having an open top, a closed bottom and one or more sidewalls extending
between the top and the bottom of the bag; and
a flap joining the top of each sidewall,
said method comprising the steps of:
placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the
catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom;
placing each of the filter bag flaps into the recess of the upper end of the catch basin; and
sandwiching each of the filter bag flaps between the top of the basin and the grate sides,
thereby holding the bag in place.

31. 31
Case Study No. 1 – 1st Reexams
• Reexamination Nos. 90/005,603 & 90/005,652
– Requested 1999 and 2000; merged
– Based on same art (Metal Era Basket)

32. 32
Case Study No. 1 – 1st Reexams
• Reexamination Nos. 90/005,603 & 90/005,652
– Certificate issued 2001
– Patentability of all claims confirmed
– PTO agreed with owner that Metal Era Basket did not
disclose the “adjacent” limitation: “each of the bag
sidewalls are adjacent to the catch basin sidewalls”
– PTO accepted owner’s definition (proffered by
argument only) of “adjacent” to require no
intervening structure anywhere between the bag
sidewalls and the catch basin sidewalls.

33. 33
Case Study No. 1 – 2nd Reexams
• Reexamination Nos. 90/007,475 & 90/008,060
– Requested 2005 and 2006; merged
– Based on same art (Construction site plans in city hall offices of
Redmond and Bellevue, WA)

34. 34
Case Study No. 1 – 2nd Reexams
• Reexamination No. 90/007,475
– Request filed 2005. Granted. SNQP raised.
– First Office action rejection
– Owner’s response makes 2 arguments
(1) Site Plans do not qualify as prior art
(2) Prior art fabric sheet is not “bag”
– Submits dictionary definition
– Submits declarations from PHOSITAs
– Submits declaration from litigation expert witness
– PTO accepts (1) and punts (2), issues NIRC

35. 35
Case Study No. 1 – 2nd Reexams
• Reexamination No. 90/008,060
– Request filed 2006
– Based on same “old” art + “new light”
– New light = declarations from Redmond & Bellevue city
employees authenticating site plans, their public availability,
and dates thereof
– Request also answers owner’s substantive arguments re. “bag”
– PTO grants request
– Merged with prior reexam (No. 90/007,475)
– Rejection reinstated; PTO says the prior art sheet has a carrying
capacity and functions like a bag

36. 36
Case Study No. 1 – 2nd Reexam
• Reexamination No. 90/008,060 cont’d
– Owner amends claim 10 to add “preforming” step:
“preforming the filter bag”
– Rejection maintained and made final; PTO says the prior art
sheet is preformed because it was manufactured
– After final rejection
• Owner’s attorney interview examiner
• Owner amends “preforming” step: “preforming the filter
bag by joining sidewall portions together.”
– Claim allowed with that after-final amendment
– Certificate issued August 2008

37. 37
Case Study No. 1 – Am. Claim
10. A method of installing a catch basin filter in a catch basin,
the catch basin comprising:
an inlet through which water and solids flow into the catch basin,
an outlet through which water flows out of the catch basin, wherein the inlet is positioned
above the outlet, and
a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess
located at the upper end, the sidewalls defining a chamber, the grate located on the top of the
basin inlet and having grate sides positioned in the recesses, and
the filter comprising:
a filter bag having an open top, a closed bottom and one or more sidewalls extending
between the top and the bottom of the bag; and
a flap joining the top of each sidewall,
said method comprising the steps of:
preforming the filter bag by joining sidewall portions together;
placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the
catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom;
placing each of the filter bag flaps into the recess of the upper end of the catch basin; and
sandwiching each of the filter bag flaps between the top of the basin and the grate sides,
thereby holding the bag in place.

38. 38
Case Study No. 1 – Litigation
• Atl. Constr. Fabrics, Inc. v. MetroChem, Inc.,
No. C03-5645-BHS (W.D. Wash.)
– Court lifts stay pending reexamination
– Summary judgment of no infringement liability
• No pre-certificate damages
• Intervening rights for Defendant to sell off inventory
– Defendant redesigns its product to have a seamless bag
– Owner/Plaintiff forced to dismiss infringement count with
prejudice

39. 39
Case Study No. 1 – Lessons
• The (Patent Wrecking) CRU
– The reason the 2nd reexam did more damage with worse art?
• Authenticating evidence as new light to support
a second request
• “Quasi inter partes” ex parte reexamination
• Merely forcing an amendment can be victory
– Eliminate liability for past infringement
– Intervening rights to sell of inventory
– Enable design-around
• Delay caused by reexamination
– 3.5 years for a rather simple reexamination (no appeals)

40. 40
Case Study No. 2
40

41. 41
Case Study No. 2
• U.S. Pat. 5,195,984
– “Expandable Interluminal Graft”
– Asserted in litigation: Cordis Corp. v. Medtronic AVE, Inc.,
511 F.3d 1157 (Fed. Cir. 2008)
– LESSON: KSR per se cannot be the “new light” to create
an SNQP based on old art.
41

42. 42
Case Study No. 2 – 1st Reexam
• Past Reexam (Control No. 90/007,628)
– Requested July 2005; certificate issued October 2006
– Considered Palmaz, Wallace, and Charnsangavej prior art
Palmaz Wallace Charnsangavej
42

43. 43
Case Study No. 2 – 1st Reexam
• Patentability Confirmed
– Patentability was confirmed because of lack
of motivation to combine Palmaz with either
Wallace or Charnsangavej
– NIRC: “[O]ne of ordinary skill in the art
would not have looked to the teachings of
Wallace or Charnsangavej to produce the
motivation to modify in a way so as to
produce the flexible stent ‘chain’ of the
instant invention.”
43

44. 44
Case Study No. 2 – 1st Reexam
44

45. 45
Case Study No. 2 – 2nd Reexam
• Control No. 90/008,949
– Request filed December 2007
– “Reexamination of . . . claim 1 . . . is requested
under 35 U.S.C. § 103(a) in view of the recent
Supreme Court decision in KSR . . . based on
the prior art of Palmaz in view of . . . Wallace
. . . or Charnsangavej.”
45

46. 46
Case Study No. 2 – 2nd Reexam
• The PTO denied the request
46

47. 47
Case Study No. 2 – 2nd Reexam
• The Requester petitioned the denial
• The PTO denied the petition
• MPEP § 2216 now says this
47

48. Case Study No. 3 48
Translogic
Transmission Gate Multiplexor
S2 S1 Z
0 X I2
1 1 I1
1 0 I0

49. 49
Case Study No. 3 – Timeline
District Court
Federal Circuit
Complaint Judgment for
Vacates
Patentee
Request for Final Board Federal Circuit
Reexam Rejection Affirms Affirms

50. 50
Case Study No. 3 – Final Decisions
• In re Translogic Tech., Inc., 504 F.3d 1249 (Fed.
Cir. 2007)
– Affirms PTO Board rejections
– Hitachi participated at Fed. Cir. as intervenor
• Translogic Tech., Inc. v. Hitachi, Ltd., 250 F.
App’x 988 (Fed. Cir. 2007) (nonprec.)
– Summarily vacates district court’s judgment
– Bye, bye $86.5 million

51. 51
Case Study No. 3 – Variation
District Court Federal Circuit
Affirms; All
Complaint Judgment for
Appeals
Patentee Exhausted
Request for Final Board Federal Circuit
Reexam Rejection Affirms Affirms
• Ultimate victory for challenger in reexam may be too late!
• How to escape final court judgment?
• Seek relief from judgment under FRCP 60(b) after the fact?
• Seek stay of judgment before it is executed?

52. 52
Case Study No. 3 - Lessons
• Reexam is an insurance policy for defendants
• The significance of a stay
• The powerful differences in claim construction
and burden of proof and perspective applied
by the PTO and courts

53. Reissue vs. Ex Parte Reexamination 53
for Patent Owners
• Reissue, unlike reexam, permits various corrections for any reason
• Reissue sometimes permits claim broadening; reexam does not
• Reissue is examined by the same examiner as the original patent
while reexam is handled by CRU
• Reissue procedures are more familiar & flexible
– Reissue can be terminated by owner but reexam cannot
– Reissue, unlike reexam, permits continuations, divisionals and RCEs
– Reexam has short deadlines and no extensions generally available;
reissue has regular deadlines and extension practice
• BUT, reissue, unlike reexam, must admit existence of an error
• AND reissue pendency may be longer than reexam
• Reissue is generally preferred unless only possible “error” is
possibly overclaiming but owner does not want to narrow claims

54. Reexamination vs. Litigation 54
for Patent Challengers
• Reexamination available only if
– Challenge is based on prior art printed publication
– Challenge is anticipation, obviousness or double patenting
• Differences
– Nature of decision maker
– Claim construction/interpretation
– Evidentiary burdens
– Claims frozen or fluid
– Participation rights (at least for ex parte reexamination)
– Supporting evidence that can be offered
– Cost
– Timing
– Standing requirements
– Possibly anonymity (only in ex parte reexamination)

55. 55
Inter Partes Reexamination

56. 56
Inter Partes Reexam Highlights
• Requested by third party only
• Available only if patent granted from
application filed on or after Nov. 29, 1999
• Third party can fully participate
• 50-page limit on all submissions
• No interviews “on the merits”
• Estoppel is matter of law

57. 57
Typical Flow of Inter Partes Reexam
Request Owner Owner
Response Response
Requester Requester
SNQP?
comments comments
YES
Order granting ACP RAN
reexamination
First Office action
Appeal
Reexamination
certificate

58. Ex Parte vs. Inter Partes 58
Third-Party Participation
Ex parte Inter partes
• Request • Request
• Comment on every Office
action and response
• Appeal to Board
• Participate in owner’s • Appeal to Federal Circuit if
appeal at Federal requested on or after
Circuit as an intervenor November 22, 2002

59. 59
Estoppel No. 1
•Applies to privies
Inter Partes Inter Partes •Once Req 1 granted
Reexam Request 1 Reexam Request 2 •Until Reexam 1 ends
Granted.
In progress

60. 60
Estoppel No. 2
•Applies to privies
Inter Partes Inter Partes •Scope is “raised or
Reexam Request 1 Reexam Request 2 could have raised”
Failed.
Claims patentable

61. 61
Estoppel No. 3
•Applies to privies
Validity Inter Partes •Scope is “raised or
Challenge Reexam Request could have raised”
Failed.
Claims upheld

62. 62
Estoppel No. 4
•Not apply to privies
Inter Partes Validity •Once reexam final
•Scope is “raised or
Reexam Request Challenge could have raised”
Failed.
Claims patentable

63. 63
Ex Parte “Estoppel”
Ex Parte Validity
Reexam Request Challenge
Failed.
Claims patentable

64. Ex Parte vs. Inter Partes 64
Reexamination Differences
• Availability
• Participation
• Estoppel?
• Cost
• Duration
– 35.8 mo. avg. for inter partes
– 25.2 mo. avg. for ex parte
• Possible anonymity
• Likelihood of favorable result

65. Ex Parte vs. Inter Partes 65
Results
Ex Parte Inter Partes
All claims
All claims confirmed
canceled 6% (6)
All claims
11%
confirmed
25%
Some
All claims claim
Some canceled changes
claim 54% (57) 40% (42)
changes
64%

66. 66
For More Information
Kevin B. Laurence
Partner
Salt Lake City, UT
Bonita Springs, FL
(801) 578-6932 Direct
(801) 578-6999 Fax April 15-17, 2010
200 S Main Street, Suite 1100
Salt Lake City, UT 84111
kblaurence@stoel.com
Matthew C. Phillips
Partner
Portland, OR
(503) 294-9851 Direct
(503) 220-2480 Fax
900 SW Fifth Avenue, Suite 2600
Portland, OR 97204
mcphillips@stoel.com

67. 67
For More Information
Kevin B. Laurence
Partner
Salt Lake City, UT
Palm Springs, CA
(801) 578-6932 Direct
(801) 578-6999 Fax October 3-5, 2010
200 S Main Street, Suite 1100
Salt Lake City, UT 84111
kblaurence@stoel.com
Matthew C. Phillips
Partner
Portland, OR
(503) 294-9851 Direct
(503) 220-2480 Fax
900 SW Fifth Avenue, Suite 2600
Portland, OR 97204
mcphillips@stoel.com